UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`
`SONY CORPORATION
`
`Petitioner
`
`v.
`
`INNOVATIVE DISPLAY TECHNOLOGIES LLC
`
`Patent Owner
`_______________
`
`Case: IPR2015-00756
`U.S. Patent No. 7,384,177
`_______________
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 7,384,177
`
`
`
`
`
`
`
`
`TOYOTA EXHIBIT 1012
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`Page 1 of 66
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`TABLE OF CONTENTS
`
`Page
`TABLE OF AUTHORITIES ............................................................................................. iv
`PETITIONER'S EXHIBIT LIST ........................................................... v_Toc411925914
`INTRODUCTION .................................................................................................... 1
`I.
`
`II. MANDATORY NOTICES ...................................................................................... 2
`
`III. PAYMENT OF FEES ............................................................................................... 4
`
`IV.
`
`V.
`
`STANDING................................................................................................................ 4
`
`REQUEST FOR INTER PARTES REVIEW OF
`CLAIMS 1-3, 5-7, 9-10, 13-15, 19, 21, AND 23-27 OF THE '177 PATENT ... 4
`
`A.
`
`B.
`
`C.
`
`D.
`
`Technology Background ............................................................................... 4
`
`The Alleged Invention Of The '177 Patent ................................................ 6
`
`The Prosecution History Of The '177 Patent ............................................ 7
`
`The Independent Claims Of The '177 Patent ............................................ 7
`
`VI. CLAIM CONSTRUCTION ..................................................................................... 8
`
`A.
`
`B.
`
`Standards For Claim Construction .............................................................. 8
`
`"deformities" (Claims 14, 23-27) .................................................................. 9
`
`VII. SUMMARY OF PRIOR ART TO THE '177 PATENT
`FORMING THE BASIS FOR THIS PETITION ................................................ 9
`
`A.
`
`B.
`
`C.
`
`U.S. Patent No. 5,054,885 ("Melby") (Ex. 1006) ....................................... 9
`
`U.S. Patent No. 5,453,855 ("Nakamura") (Ex. 1007) .............................. 10
`
`U.S. Patent No. 4,142,781 ("Baur") (Ex. 1008) ........................................ 10
`
`D. U.S. Patent No. 5,432,626 ("Sasuga") (Ex. 1009)..................................... 10
`
`E.
`
`U.S. Patent No. 5,005,108 ("Pristash") (Ex. 1010) .................................. 10
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`Page 2 of 66
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`F.
`
`U.S. Patent No. 5,567,042 ("Farchmin") (Ex. 1011) ............................... 11
`
`VIII. GROUNDS FOR UNPATENTABILITY OF EACH CLAIM ....................... 11
`
`A. Ground 1: Claims 1-3, 5-7, 9-10, 13-15, 19,
`21, And 23-25 Are Unpatentable Under
`35 U.S.C. § 103(a) As Being Obvious Over Melby .................................. 11
`
`B.
`
`Ground 2: Claims 1, 2, 6, 7, 9, 10, 13, 14, 15,
`19, 21, 23-24, And 26-27 Are Unpatentable Under
`35 U.S.C. § 102(e) As Being Anticipated By Nakamura ......................... 23
`
`C. Ground 3: Claims 1, 2, 13, And 14 Are Unpatentable
`Under 35 U.S.C. § 103(a) As Being Obvious Over Baur ........................ 33
`
`D. Ground 4: Claims 6, 9, 10, 15, 19, 21, And 23
`Are Unpatentable Under 35 U.S.C. § 103(a) As
`Being Obvious Over Baur In View Of Nakamura .................................. 39
`
`E. Ground 5: Claims 1, 2, 6, 7, 9, 10, 13, 15, And 21
`Are Unpatentable Under 35 U.S.C. § 103(a)
`As Obvious Over Sasuga In View Of Farchmin ..................................... 44
`
`F.
`
`Ground 6: Claims 14 And 19 Are Unpatentable
`Under 35 U.S.C. § 103(a) As Obvious Over
`Sasuga In View Of Farchmin In View Of Nakamura ............................. 54
`
`G. Ground 7: Claims 23, 25, And 26 Are Unpatentable
`Under 35 U.S.C. § 103(a) As Obvious Over
`Sasuga In View Of Farchmin In View Of Pristash ................................. 56
`
`IX. CONCLUSION ........................................................................................................ 58
`
`
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`Page 3 of 66
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`TABLE OF AUTHORITIES
`
`
`CASES
`Arris Group, Inc. v. C-Cation Techs., LLC,
`IPR2014-00747 (P.T.A.B. Nov. 24, 2014) ..................................................................... 8
`
`Page(s)
`
`Boston Sci. Scimed, Inc. v. Cordis Corp.,
`554 F.3d 982 (Fed. Cir. 2009) ........................................................................................ 12
`
`In re Cuozzo Speed Techs., LLC,
`2014-1301, 2015 U.S. App. LEXIS 1699 (Fed. Cir. Feb. 4, 2015) ............................. 8
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) ....................................................................................... 8
`
`STATUTES, RULES & OTHER AUTHORITIES
`35 U.S.C. § 102(b) ................................................................................................. 9, 10, 11, 23
`
`35 U.S.C. § 103(a) ............................................................................................................passim
`
`35 U.S.C. § 112........................................................................................................................ 9
`
`35 U.S.C. § 301(a)(2) .............................................................................................................. 8
`
`37 C.F.R. § 42.100(b) ............................................................................................................. 8
`
`
`
`
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`Page 4 of 66
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`PETITIONER'S EXHIBIT LIST
`Description
`
`U.S. Patent No. 7,384,177
`Prosecution History of U.S. Patent No. 7,384,177
`Complaints filed in Related District Court Cases
`Declaration of Richard A. Flasck ("Flasck Decl.")
`U.S. Patent No. 5,461,547 ("Ciupke")
`U.S. Patent No. 5,054,885 ("Melby")
`U.S. Patent No. 5,453,855 ("Nakamura")
`U.S. Patent No. 4,142,781 ("Baur")
`U.S. Patent No. 5,432,626 ("Sasuga")
`U.S. Patent No. 5,005,108 ("Pristash")
`U.S. Patent No. 5,567,042 ("Farchmin")
`Claim Construction Memorandum and Order, IDT v. Acer Inc. et al., Case
`No.2:13-cv-00522, Aug. 26, 2014 [Dkt. 101]
`DDG/IDT's Initial Claim Charts to Sony served on November 21, 2014,
`Exhibit B1 - All Products Containing Nypon Display/touch Module, US
`Patent No 7,384, 177
`English Translation of JP H06-242731 ("Mino")
`Japanese Version of JP H06-242731
`Translation Certificate of H06-242731
`English Translation of JP H06-003526 ("Nagatani")
`Japanese Version of JP H06-003526
`Translation Certificate of JP H06-003526
`U.S. Patent No. 5,944,405 ("Takeuchi")
`U.S. Pat. No. 5,808,784 ("Ando")
`3M product brochure 75-0500-0403-7, "Brightness Enhancement Film
`(BEF)" (1993)
`English Translation of JP H06-230378 ("Kisoo")
`Japanese Version of JP H06-230378
`Translation Declaration of JP H06-230378
`English Translation of JP H05-69732 ("Seraku")
`Japanese Version of JP H05-69732
`Translation Certificate of JP H05-69732
`
`Exhibit #
`1001
`1002
`1003
`1004
`1005
`1006
`1007
`1008
`1009
`1010
`1011
`1012
`
`1013
`
`1014
`1015
`1016
`1017
`1018
`1019
`1020
`1021
`1022
`
`1023
`1024
`1025
`1026
`1027
`1028
`
`Page 5 of 66
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`I.
`
`INTRODUCTION
`Pursuant to 35 U.S.C. § 311, Petitioner hereby respectfully requests inter partes
`
`review of claims 1-3, 5-7, 9-10, 13-15, 19, 21, and 23-27 of Ex. 1001, U.S. Patent
`
`No. 7,384,177 ("the '177 Patent"), which issued on June 10, 2008. The challenged
`
`claims are unpatentable under 35 U.S.C. §§ 102 and 103 over the prior art publications
`
`and patents identified and applied in this Petition.
`
`The present Petition presents substantially the same prior art and grounds for
`
`invalidity as presented in IPR2014-01362, filed by LG Display Co., Ltd., except that as
`
`to dependent claim 27, this Petition relies upon Nakamura (Ex.1007) rather than
`
`Melby (Ex.1006). Also presented herein is an explanation of the claim element of
`
`"one or more flat, angled, faceted or curved reflective or refractive surfaces" in view
`
`of the '177 Patent's specification and figures. In addition, this Petition presents
`
`additional explanation as to what Melby discloses and why it would be obvious to
`
`modify (in Ground 1). It also explains why the prior art meets the claim elements of:
`
`continuous side walls (cl.1); controlling the emitted light "to fit a particular
`
`application" (cls.1, 14, 23); producing "a desired light output color or uniformity"
`
`(cls.9, 15); providing diffusion and
`
`light mixing (cls.10, 13, 21); and the
`
`refractive/reflective surfaces being "in close proximity to and around and behind the
`
`light source" (cl.5).
`
`Page 6 of 66
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`II. MANDATORY NOTICES
`A. Real Parties-In-Interest. Sony Corporation, Sony Corporation of America,
`
`Sony Electronics Inc., Sony Mobile Communications (USA) Inc., Sony Mobile
`
`Communications Inc., and Sony Mobile Communications AB.
`
`B. Related Matters. Pursuant to 37 C.F.R. § 42.8(b)(2), Petitioner submits that
`
`the '177 Patent is the subject of a patent infringement lawsuit brought by the Patent
`
`Owner, Innovative Display Technologies LLC (see Ex.1003), against Petitioner in the
`
`United States District Court for the District of Delaware: Delaware Display Group LLC
`
`and Innovative Display Techs. LLC v. Sony Corp., Sony Corp. of America, Sony Electronics Inc.,
`
`and Sony Mobile Commc'ns (USA) Inc., Case No. 1:13-cv-02111. The '177 Patent is also
`
`asserted in at least the actions:
`
`Description
`IDT v. American Honda Motor Co. et al.
`IDT v. AT&T Inc., et. al.
`IDT v. BMW of North America, LLC et. al.
`IDT v. Dell Inc.
`IDT v. Ford Motor Company
`IDT v. General Motor Company
`IDT v. Hewlett-Packard Corporation
`IDT v. Hyundai Motor Group et al.
`IDT v. Mercedes-Benz U.S. International, Inc. et al.
`IDT v. Nissan Motor, Co., Ltd. et. al.
`IDT v. Sprint Corporation, et. al.
`IDT v. Toyota Motor Corporation et al.
`
`Docket Number
`2:14-cv-00222, EDTX
`2:14-cv-00720, EDTX
`2:14-cv-00106, EDTX
`2:13-cv-00523, EDTX
`1:14-cv-00849, D. Del.
`1:14-cv-00850, D. Del.
`2:13-cv-00524, EDTX
`2:14-cv-00201, EDTX
`2:14-cv-00535, EDTX
`2:14-cv-00202, EDTX
`2:14-cv-00721, EDTX
`2:14-cv-00200, EDTX
`
`Page 7 of 66
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`

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`Description
`IDT v. Volkswagen Ag et al.
`DDG and IDT v. Lenovo Group Ltd. et al.
`DDG and IDT v. LG Electronics Inc. et al.
`DDG and IDT v. Pantech Co., Ltd et al.
`DDG and IDT v. Sony Corporation et al.
`DDG and IDT v. Vizio, Inc.
`
`Docket Number
`2:14-cv-00300, EDTX
`1:13-cv-02108, D.Del.
`1:13-cv-02109, D.Del.
`1:13-cv-02110, D.Del.
`1:13-cv-02111, D.Del.
`1:13-cv-02112, D.Del.
`
`Related IPRs include: IPR2014-01362; IPR2015-00359; and IPR2015-00489.
`
`Petitioner is also concurrently filing petitions to review U.S. Patent Nos. 7,300,194;
`
`7,404,660; 7,434,974; 7,537,370; 7,914,196; and 8,215,816. Due to the related nature of
`
`this technology, and parties, the Board may consider assigning these petitions to a
`
`same panel in the interests of administrative efficiency.
`
`C. Lead and Back-Up Counsel and Service Information.
`
`LEAD COUNSEL
`Gregory S. Gewirtz (Reg. No. 36,522)
`LERNER, DAVID, LITTENBERG,
` KRUMHOLZ & MENTLIK, LLP
`600 South Avenue West
`Westfield, NJ 07090
`Tel: 908-518-6343
`Fax: 908-654-7866
`E-mail: GGewirtz.ipr@ldlkm.com
`
`BACK-UP COUNSEL
`Jonathan A. David (Reg. No. 36,494)
`Robert B. Hander (Reg. No. 65,849)
`LERNER, DAVID, LITTENBERG,
` KRUMHOLZ & MENTLIK, LLP
`600 South Avenue West
`Westfield, NJ 07090
`Tel: 908-518-6331/6342
`Fax: 908-654-7866
`E-mail: JDavid.ipr@ldlkm.com
` RHander.ipr@ldlkm.com
`
`Scott A. McKeown (Reg. No. 42,866)
`OBLON, McCLELLAND, MAIER &
`NEUSTADT
`1940 Duke St.
`
`Page 8 of 66
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`Alexandria, VA 22314
`Tel: 703-412-6297
`Fax: 703-413-2220
`E-mail: CPDocketMcKeown@oblon.com
`
`III. PAYMENT OF FEES
`Pursuant to 37 C.F.R. § 42.103(a), the Office is authorized to charge the fee set
`
`forth in 37 C.F.R. § 42.15(a) to Deposit Account 121095 as well as any additional fees
`
`that might be due in connection with this Petition.
`
`IV. STANDING
`Pursuant to 37 C.F.R. § 42.104(a), Petitioner certifies that the patent sought for
`
`review, the '177 Patent, is available for inter partes review and that Petitioner is not
`
`barred or estopped from requesting an inter partes review of the patent.
`
`V. REQUEST FOR INTER PARTES REVIEW OF
`CLAIMS 1-3, 5-7, 9-10, 13-15, 19, 21, AND 23-27 OF THE '177 PATENT
`Pursuant to 37 C.F.R. § 42.104(b), Petitioner requests that the Board find
`
`unpatentable claims 1-3, 5-7, 9-10, 13-15, 19, 21, and 23-27 of the '177 Patent. Such
`
`relief is justified as the alleged invention of the '177 Patent was described by others
`
`prior to the effective filing date of the '177 Patent.
`
`A. Technology Background
`Flat panel displays for TVs, computers, etc. were pioneered in the 1980s, with
`
`active matrix liquid crystal display (LCD) technology dominating the market by the
`
`early 1990s. (Flasck Decl. ¶ 39.) LCDs comprise an array of pixels that act as a large
`
`matrix of shutters that modulate light passing through the display panel. (Id. ¶ 40.)
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`Page 9 of 66
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`LCDs typically need a light generating structure, commonly called a backlight unit
`
`(BLU), positioned beneath the liquid crystal panel. (Id. ¶¶ 41-42.) Partially collimated
`
`light from the BLU enters the LCD panel from the bottom and exits the top to be
`
`viewed by the user. Each pixel in the LCD matrix individually modulates the light
`
`from the BLU to present text, graphic, or video images to the user. (Id. ¶ 63.)
`
`Since the mid-1990s, the typical BLU found in commercially available products
`
`included a light source, a reflector to concentrate the light, a light guide with
`
`deformities on the lower surface, a set of light re-directing films, sheets or plates
`
`between the light guide and the LCD panel, and a tray, case or frame. (Id. ¶¶ 43-44.)
`
`The most common light sources used were Cold Cathode Fluorescent Lamps
`
`(CCFLs) and light emitting diodes (LEDs), with the design choice between the two
`
`being based on desired thinness profile, brightness, and power consumption. (Id.
`
`¶¶ 45-48.)
`
`The typical light guide was generally constructed from a transparent plastic
`
`plate that would transport the light from the input edge adjacent to the lamp, to the
`
`output surface, typically the top surface of the light guide plate. (Id. ¶ 49.) The light
`
`injected into the input edge would be captured in, and uniformly distributed
`
`throughout, the light guide by the principle of Total Internal Reflection (TIR). (Id.)
`
`However, when the light encountered the deformities on the bottom surface of
`
`the light guide, the light would become scattered and redirected at such angles that the
`
`Page 10 of 66
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`

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`TIR condition would be defeated and the scattered light would exit through the top
`
`exit surface of the light guide. (Id. ¶¶ 50-53.)
`
`It was also common to include a set of light re-directing films for changing the
`
`angle of the emitted light so that it would be more nearly perpendicular to the light
`
`emitting surface, and thus provide a brighter image and enable lower power
`
`consumption. (Id. ¶¶ 54-60.) In addition, the components of the LCD module were
`
`often physically held in place by a metal tray, which could include a reflective bottom
`
`and sides and an open top. (Id. ¶¶ 61-62.)
`
`B. The Alleged Invention Of The '177 Patent
`The '177 Patent discloses light emitting assemblies having a tray that forms a
`
`cavity or recess. (Ex.1001 Abstract.) The tray acts as a back, side or edge reflector
`
`having one or more secondary reflective or refractive surfaces. (Id.) Fig. 6 shows that
`
`the tray would act as at least one of a back, side edge, and end edge reflector, and that
`
`one of the side edges, 38, is considered a secondary reflective or refractive surface:
`
`The tray 35 may act as a back reflector
`as well as end edge and/or side edge
`reflectors for the panel 33 and side
`and/or back reflectors 37 for the light
`sources 3. Additionally, one or more
`secondary
`reflective or
`refractive
`surfaces 38 may be provided on the
`panel member 33 and/or tray 35 to reflect a portion of the light around
`one or more corners or curves in a non-rectangular shaped panel
`member 33. These secondary reflective/refractive surfaces 38 may be
`flat, angled, faceted or curved, and may be used to extract a portion of
`the light away from the panel member in a predetermined pattern.
`
`Page 11 of 66
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`(Ex. 1001, 6:67-7:10, Fig.6; Flasck Decl. ¶¶ 64-66.)
`C. The Prosecution History Of The '177 Patent
`The Examiner rejected claims 1-28 in the first office action for failing to
`
`comply with the written description requirement of § 112 ¶ 1. In response, the
`
`applicant noted that "the Examiner acknowledges that the specification describes
`
`Figure 6 as having a tray 35 with a cavity as claimed in claim 1 but contends there is
`
`no support of at least one sheet, film or substrate positioned over the cavity or recess
`
`of the tray, stating that Figure 5 is a completely different embodiment and is not
`
`similar to Figure 6." (Ex.1002, Reply 7.) The applicant then amended claim 1 to
`
`require that the sheet, film or substrate was "overlying the assembly" rather than
`
`"positioned over the cavity or recess" and pointed to column 6, lines 29-33, for
`
`support. (Id. at 2, 7.)
`
`D. The Independent Claims Of The '177 Patent
`Claims 1 and 15 call for a light emitting assembly comprising three elements,
`
`(1) a tray, (2) at least one light source, and (3) at least one sheet, film or substrate. The
`
`claims also call for the sheet, film or substrate to overlie the assembly of which it is
`
`part. The sheet, film, or substrate, however, cannot both be part of the assembly, and
`
`at the same time, overlie the assembly. Because the independent claims recite a
`
`physical impossibility, for the purposes of this IPR only, Petitioner will interpret the
`
`claims as the Patent Owner is interpreting them in its infringement contentions
`
`against Petitioner. (Ex.1013, at 7.)
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`Page 12 of 66
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`VI. CLAIM CONSTRUCTION
`A.
`Standards For Claim Construction
`The '177 Patent expires on June 27, 2015. An unexpired claim subject to
`
`inter partes review is given its "broadest reasonable construction ["BRI"] in light of the
`
`specification of the patent in which it appears." 37 C.F.R. § 42.100(b). If an inter partes
`
`review involves claims of an expired patent, a patentee is unable to make claim
`
`amendments, and the Board applies the claim construction principles outlined in
`
`Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005), that the words of a claim "are
`
`generally given their ordinary and customary meaning" as understood by a person of
`
`ordinary skill in the art in question at the time of the invention. In re Cuozzo Speed
`
`Techs., LLC, 2014-1301, 2015 U.S. App. LEXIS 1699, at *16 n.6 (Fed. Cir. Feb. 4,
`
`2015) (citing In re Rambus Inc., 753 F.3d 1253, 1256 (Fed. Cir. 2014); see, e.g., Arris
`
`Group, Inc. v. C-Cation Techs., LLC, IPR2014-00747, Decision (P.T.A.B. Nov. 24,
`
`2014), Paper 22, at 10. Here, as shown below, claim constructions under either the
`
`BRI or Phillips standard would lead to the same result.
`
`Moreover, as shown below, those constructions further comport with positions
`
`that the Patent Owner has taken in its prior claim construction briefing in related
`
`Federal Court litigations. In that regard, Petitioner notes that 35 U.S.C. § 301(a)(2)
`
`permits citation of Patent Owners' statements regarding claim scope to prevent
`
`patentees from arguing broad constructions in Federal Court litigation while using
`
`narrow constructions in proceedings before the Office.
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`Page 13 of 66
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`Petitioner also notes that while
`
`it advances the following proposed
`
`construction for the purposes of this petition, it reserves the right (not available to it
`
`in the present proceeding) to assert in any copending or future litigation that one or
`
`more of the following claim terms is indefinite or lacks written description support
`
`under 35 U.S.C. § 112.
`
`B.
`"deformities" (Claims 14, 23-27)
`The '177 Patent expressly defines the term "deformities" as follows: "As used
`
`herein, the term deformities or disruptions are used interchangeably to mean any
`
`change in the shape or geometry of the panel surface and/or coating or surface
`
`treatment that causes a portion of the light to be emitted." (Ex.1001, 4:44-48.) In the
`
`2:13-cv-00522 litigation, the Patent Owner agreed with, and the court adopted, this
`
`same construction. (Ex.1012, at 58.) Thus, under the BRI or Philips standard,
`
`"deformities" should include "any change in the shape or geometry of a surface
`
`and/or coating or surface treatment that causes a portion of the light to be emitted."
`
`VII. SUMMARY OF PRIOR ART TO THE '177 PATENT
`FORMING THE BASIS FOR THIS PETITION
`
`A. U.S. Patent No. 5,054,885 ("Melby") (Ex. 1006)
`Melby qualifies as prior art under 35 U.S.C. § 102(b) because Melby issued as a
`
`patent on October 8, 1991, more than one year before the June 27, 1995 priority date
`
`to which the '177 Patent may be entitled. Melby was not cited or considered during
`
`prosecution of the application that led to the '177 Patent.
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`Page 14 of 66
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`B. U.S. Patent No. 5,453,855 ("Nakamura") (Ex. 1007)
`Nakamura qualifies as prior art under 35 U.S.C. § 102(e) because it was filed on
`
`December 9, 1993, before the June 27, 1995 priority date to which the '177 Patent
`
`may be entitled. Nakamura was not cited or considered during prosecution of the
`
`application that led to the '177 Patent.
`
`C. U.S. Patent No. 4,142,781 ("Baur") (Ex. 1008)
`Baur qualifies as prior art under 35 U.S.C. § 102(b) because Baur issued as a
`
`patent on March 6, 1979, more than one year before the June 27, 1995 priority date to
`
`which the '177 Patent may be entitled. Baur was not cited or considered during
`
`prosecution of the application that led to the '177 Patent.
`
`D. U.S. Patent No. 5,432,626 ("Sasuga") (Ex. 1009)
`Sasuga qualifies as prior art under 35 U.S.C. § 102(e) because Sasuga was filed
`
`on March 11, 1993, before the June 27, 1995 priority date to which the '177 Patent
`
`may be entitled. Sasuga was not cited or considered during prosecution of the
`
`application that led to the '177 Patent.
`
`E. U.S. Patent No. 5,005,108 ("Pristash") (Ex. 1010)
`Pristash qualifies as prior art under 35 U.S.C. § 102(b) because Pristash issued
`
`as a patent on April 2, 1991, more than one year before the June 27, 1995 priority date
`
`to which the '177 Patent may be entitled. Pristash was cited as a reference in an IDS
`
`during prosecution, but was not relied upon as the basis to reject any claim. In fact,
`
`Pristash was not discussed on the record at all during the prosecution proceedings.
`
`Page 15 of 66
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`

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`F. U.S. Patent No. 5,567,042 ("Farchmin") (Ex. 1011)
`Farchmin qualifies as prior art under 35 U.S.C. § 102(e) because Farchmin was
`
`filed on May 27, 1994, before the June 27, 1995 priority date to which the '177 Patent
`
`may be entitled. Farchmin was not cited or considered during prosecution of the
`
`application that led to the '177 Patent.
`
`VIII. GROUNDS FOR UNPATENTABILITY OF EACH CLAIM
`In light of the disclosures detailed below, the '177 Patent is unpatentable for at
`
`least the reasons summarized in the chart below and discussed in more detail herein.
`
`Prior art
`Ground # Ground
`1
`103(a) Melby
`
`Exhibit(s) #
`Ex.1006
`
`2
`
`102(e) Nakamura
`
`Ex.1007
`
`103(a) Baur
`103(a) Baur and
`Nakamura
`Sasuga and
`Farchmin
`Sasuga, Farchmin,
`Exs.1009, 1011,
`and Nakamura
`1007
`Sasuga, Farchmin,
`Exs.1009, 1011,
`and Pristash
`1010
`A. Ground 1: Claims 1-3, 5-7, 9-10, 13-15, 19,
`21, And 23-25 Are Unpatentable Under
`35 U.S.C. § 103(a) As Being Obvious Over Melby
`Melby discloses a light fixture for use in flat panel displays. (Ex.1006, 1:14-16.)
`
`3
`4
`
`5
`
`6
`
`7
`
`103(a)
`
`103(a)
`
`103(a)
`
`Ex.1008
`Exs.1008, 1007
`
`Exs.1009, 1011
`
`Claims
`1-3, 5-7, 9-10,
`13-15, 19, 21, 23-25
`1, 2, 6, 7, 9, 10,
`13-15, 19, 21, 23-24,
`26, 27
`1, 2, 13, 14
`6, 9, 10, 15, 19, 21,
`23
`1, 2, 6, 7, 9, 10, 13,
`15, 21
`14, 19
`
`23, 25, 26
`
`The "light fixture has a source of partially collimated light for emitting light having an
`
`axis of collimation." (Id. Abstract.) Melby also discloses "a housing 30 including
`
`Page 16 of 66
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`

`

`walls 32, 34, 36 and 38 defin[ing] an optical cavity having an optical window" as well
`
`as a rear wall. (Id. 2:44-45 (emphasis added), 2:63-65; Flasck Decl. ¶ 79.)
`
`Melby discloses all of the limitations of claims 1-3, 5-7, 9-10, 13-15, 19, 21,
`
`23-25, and 27, but within both the first and third embodiments. A person of ordinary
`
`skill in the art would be motivated to pick and choose features of the different
`
`embodiments to combine because they are predictable variations taught within the
`
`same patent, and there is no disclosure suggesting that they should not or cannot be
`
`combined. (Flasck Decl. ¶ 81; Ex.1006, 3:1-6.) See Boston Sci. Scimed, Inc. v. Cordis Corp.,
`
`554 F.3d 982, 991 (Fed. Cir. 2009) ("Combining two embodiments disclosed adjacent
`
`to each other in a prior art patent does not require a leap of inventiveness.").
`
`The elements of independent claims 1 and 15 are shown in the annotated
`
`figures below, composed of Figures 1 and 3 of Melby labeled with claim elements:
`
`
`
`Page 17 of 66
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`

`

`Regarding claims 1 and 15, Melby discloses a housing 30 with continuous side
`
`walls 32, 34, 36, and back wall 38, which form a cavity completely surrounded by the
`
`side walls. (Ex.1006, 2:63-65; Flasck. Decl. ¶ 83.) A person of ordinary skill in the art
`
`would understand that the drawings in Melby show a cross-sectional view, and that
`
`housing 30 of Fig. 3 includes a fourth side wall adjoining walls 32 and 36 to form the
`
`optical cavity covered with the transparent cover 40. Even if this were not the case, it
`
`would have been obvious to one of skill in the art to include an additional side wall in
`
`Melby to fully enclose the housing ____ for use with "portable computers" for
`
`example ____ to achieve the predictable result, known in the field, of preventing light
`
`from escaping and enhancing brightness. (Ex.1006, 1:16-19; Flasck Decl. ¶ 84.)
`
`The housing includes mounted light sources 42 and 44 (cls.1, 6, 15). (Flasck
`
`Decl. ¶ 88-89.) The housing is also reflective, having reflective side walls, and contains
`
`secondary surfaces, i.e., structured surface 46 made of prisms, which facilitate better
`
`mixing of light from the light sources (cls.9, 15), which may be LEDs (cl.19). (Id.
`
`1:57-60, 2:15-17, 2:20-33, 2:67-3:1; Flasck Decl. ¶¶ 86, 94-99.) In Fig. 3, housing 30
`
`acts as at least a back reflector, and additional reflective or refractive surfaces 46 are
`
`provided along the bottom of the housing 30 (Ex.1006, 2:63-3:6), just as Fig. 6 of the
`
`'177 Patent adds additional reflective or refractive surfaces 38 along the sides, to
`
`redirect at least a portion of the light emitted by the light source in a predetermined
`
`manner within the cavity or recess (Flasck Decl. ¶¶ 94-95). The prisms 24 produce a
`
`Page 18 of 66
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`

`

`desired light output uniformity (cl.15) because they "reflect light from light source 16
`
`in a predetermined direction" that is "[t]ypically . . . perpendicular" to member 14,
`
`which would be a desired uniformity of direction as shown by arrows in Fig. 3.
`
`(Ex.1006, 2:30-34, Fig.3; Flasck Decl. ¶¶ 87, 146.)
`
`Sheet 40 overlies the assembly, and may be translucent (i.e., diffusing) and
`
`contain pillows optics or Fresnel prisms, which are raised or depressed prismatic
`
`deformities (cls.14, 23-25), and which reflect light and provide additional light mixing
`
`(cls.10, 13, 21). (Ex.1006, 2:11-14, 2:30-33; Flasck Decl. ¶¶ 90-93, 126-139, 153-166.)
`
`One of ordinary skill in the art would understand that light passing through a
`
`transparent member (with pillow optics or Fresnel prisms) or a translucent (diffusing)
`
`material overlying the cavity will provide additional light mixing because each of these
`
`redirects each incident light ray into multiple output directions via refractive or
`
`reflective effects. (Flasck Decl. ¶ 147.)
`
`Light transmitting member 14 with optics or prisms is a diffuser or reflector
`
`because light would be reflected by the structures provided on the substrate (cls.13,
`
`21). (Ex.1006, 2:9-14; Flasck Decl. ¶¶ 130-134, 153-156.) Member 14, or cover 40,
`
`also controls the light output ray angles emitted from the assembly to fit a particular
`
`application, such as for portable computers or automobile tail and brake lights, via the
`
`use of pillow optics or Fresnel prisms, selectable depending on the application (cls.1,
`
`14, 23). (Ex.1006, 1:16-21, 2:11-14; Flasck Decl. ¶¶ 92, 135-139, 157-160.)
`
`Page 19 of 66
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`

`

`Regarding claims 2, 3, and 7, the secondary reflective surfaces 46 in Melby may
`
`be planar or curved, or prismatic. (Ex.1006, 3:1-14, 4:5-8, 2:15-20; Flasck Decl.
`
`¶¶ 101-107, 116-120.) As to claim 5, light source 16 may be "any source of partially
`
`collimated light such as a fluorescent tube . . . with an appropriate reflector or an
`
`incandescent light with a reflector." (Ex.1006, 2:15-20 (emphasis added).) The
`
`reflector would form wall 32 of Fig. 3, for example, and thus be a part of the tray with
`
`the light source positioned in the tray/cavity. (Flasck Decl. ¶¶ 108-112.) The
`
`refractive/reflective surfaces of the reflector would be in close proximity to, and
`
`around and behind, the light source. (Id.) As to claim 9, the light is "substantially"
`
`collimated, and reflected, and thus mixes in the cavity. (Ex.1006, 2:30-36; Flasck Decl.
`
`¶¶ 121-125.)
`
`The claim chart below shows how each element of claims 1-3, 5-7, 9-10, 13-15,
`
`19, 21, and 23-25 of the '177 Patent are obvious over Melby.
`
`'177 Claim Element
`1. A light emitting
`assembly comprising
`
`Melby (Ex. 1006)
`"A light fixture has a source of partially collimated light
`for emitting light having an axis of collimation. A
`structured surface has a plurality of prisms that are
`rendered reflective for reflecting light from the light
`source out of the cavity. The peaks of the prisms define a
`surface at least a portion of which makes an acute angle
`with the axis of collimation." (Ex.1006 Abstract.)
`
`Page 20 of 66
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`

`

`'177 Claim Element
`[1.a] a tray having a back
`wall and continuous side
`walls that form a hollow
`cavity or recess
`completely surrounded
`by the side walls,
`
`Melby (Ex. 1006)
`"According to the invention a housing defines an optical
`cavity having an optical window." (Id. 1:54-55.)
`"Fig. 3 illustrates an alternative embodiment wherein a
`housing 30 including walls 32, 34, 36 and 38 defines an
`optical cavity having an optical window." (Id. 2:63-65.)
`
`[1.b] at least one light
`source located, mounted
`or positioned
`in
`the
`cavity or recess,
`
`[1.c] and at least one
`sheet, film or substrate
`overlying the assembly
`for controlling the light
`emitted from the
`assembly to fit a
`particular application,
`
`
`"A source of partially collimated light 16 is positioned
`inside the optical cavity and adjacent side 10 of the
`housing. Light source 16 may be any source of partially
`collimated light such as a fluorescent tube or other gas
`discharge lighting element with an appropriate reflector or
`an incandescent light with a reflector." (Id. 2:15-20.)
`"Light from two partially collimated light sources is
`directed from light sources 42 and 44 to structured surface
`46." (Id. 2:67-3:1.)
`"Light transmitting member 14 may be a transparent or
`translucent material. If desired, light transmitting member
`14 could include structures such as pillow optics or
`Fresnel prisms." (Id. 2:11-14, Fig.1.)
`"A transparent or translucent cover 40 lies in the optical
`window." (Id. 2:65-55, Fig.3.)
`"In various situations thin light fixtures are desirable. For
`example, back-lit flat panel displays normally should be
`kept as thin as possible. When they are thinner they tend
`to be lighter in weight and more compact, both desirable
`properties when they are used in applications such as
`portable computers. Automobile taillights and brake lights
`also
`should be kept
`compact where possible."
`
`Page 21 of 66
`
`

`

`Melby (Ex. 1006)
`
`(Id. 1:16-21.)
` "Fig. 3 illustrates an alternative embodiment wherein a
`housing 30 including walls 32, 34, 36 and 38 defines an
`optical cavity having an optical window. . . . Light from
`two partially collimated light sources is directed from light
`sources 42 and 44 to structured surface 46." (Id. 2:63-3:1,
`Fig.3.)
`
`
`'177 Claim Element
`
`[1.d] wherein the tray
`acts as at least one of a
`back, side edge, and end
`edge reflector and has
`one or more secondary
`